OneLBriefs

Markman v. Westview Instruments

SCOTUS - 1996 (517 U.S. 370)

Facts:

P filed a patent infringement suit against D for his dry cleaning inventory control system.

There was a dispute over the interpretation of the word inventory in the patent.

The jury in the trial court returned a verdict for P which the judge set aside because the jury interpreted the word inventory incorrectly.

P appealed saying that the interpretation of terms in the patent claim are a jury issue.

Procedural History:

Lower court judge found for D, no infringement.

COA affirmed, no infringement.

SCOTUS affirmed, no infringement.

Issues:

Is a particular issue occurring within a jury trial necessarily a jury issue?

Holding/Rule:

Not all issues occurring within a jury trial are necessary jury issues (i.e. construction of a patent claim).

Reasoning:

There is no reliable historical basis for the claim that patent claim interpretation should be a jury issue.

The two elements of a patent case are construing the patent and determining whether infringement occurred. The first element should be determined by the judge, the second element is a question of fact that should be submitted to the jury.

Where history and precedent provide no clear answers, functional considerations also play their part in the choice between judge and jury to define terms of art.

One judicial actor is better positioned than another to decide the issue in question…judges!

The judge is more likely to give a proper interpretation to such instruments than a jury because of training and discipline.

There is sufficient reason to treat construction of terms of art like many other responsibilities ceded to judges in the normal course of a trial.